USPTO Patents Application 09544508

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/544,508

04/06/2000

Phil Wyatt

MCO-P-00-001

9081

29013 7590

PATENTS+TMS, P.C.
2849 W. ARMITAGE AVE.
CHICAGO, IL 60647

10/19/2007

EXAMINER

VETTER, DANIEL

ART UNIT

PAPER NUMBER

3628

MAIL DATE

DELIVERY MODE

10/19/2007 PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

United States Patent and Trademark Office

Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

www.uspto.gov

MAILED

OCT 1 9 2007

GROUP 3600

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Application Number: 09/544,508
Filing Date: April 06, 2000
Appellant(s): WYATT, PHIL

Brian Mattson
(Reg. No. 35,018)
For Appellant

EXAMINER'S ANSWER

This is in response to the appeal brief filed 27 August 2007 appealing from the Office
action mailed 3 August 2004.

Application/Control Number; 09/544,508
Art Unit: 3639

Page 2

(1) Real Party in Interest

A statement identifying by name the real party in interest is contained in the brief.

(2) Related Appeals and Interferences

The following are the related appeals, interferences, and judicial proceedings
known to the examiner which may be related to, directly affect or be directly affected by
or have a bearing on the Board's decision in the pending appeal:

09/544,509 was appealed on September 15, 2003.

(3) Status of Claims

The statement of the status of claims contained in the brief is correct.

(4) Status of Amendments After Final

The appellant's statement of the status of amendments after final rejection
contained in the brief is correct.

(5) Summary of Claimed Subject Matter

The summary of claimed subject matter contained in the brief is correct.

(6) Grounds of Rejection to be Reviewed on Appeal

The appellant's statement of the grounds of rejection to be reviewed on appeal is
correct.

(7) Claims Appendix

The copy of the appealed claims contained in the Appendix to the brief is correct.

(8) Evidence Relied Upon

Application/Control Number: 09/544,508
Art Unit: 3639

Page 3

6,356,874

Ohm

3-2002

4,135.241

Stannis et al

1-1979

6,289,088

BRUNO et al

9-2001

(9) Grounds of Rejection

The following ground(s) of rejection are applicable to the appealed claims:

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

9-1 . Claims 1-2, 4-9, 14-17, 19 are rejected under 35 U.S.C. 103(a) as being

anticipated by Ohrn (6,356,874) in view of Stanis et al ('4,135,241).

As per Claim 1, 14.
Ohrn ('874) discloses:

providing a network, see column 7, lines 60-66 and figure 1 ;
providing a database connected to the computer network, see figure 1;
inputting bed availability information for a plurality of healthcare facilities, wherein
each of the plurality of healthcare facilities have beds for providing a plurality of types of
medical care and further wherein the bed availability information is input into the
database and is accessible by the computer network, see column 6, lines 6-45, column
7, lines 60-66 and column 10, lines 22-30;

providing a first access to the database for determining the available bed for the
patient by a user of the database, see column 6, lines 6-45 and column 21, lines 29-34,
searching the bed availability information for the plurality of healthcare facilities in
the database, see column 5, lines 37-63;

determining the available bed based on user preferences, see column 5 lines 37-

Ohrn ('874) does not specifically disclose entering individual medical condition of
a patient and searching, matching the bed to the condition.

Claim Rejections - 35 USC § 103

63.

Application/Control Number: 09/544,508

Page 4

Art Unit: 3639

Stanis et al ('241) teaches searching for availability of beds, including reserving
beds, and the information about the bed, including data regarding the nursing station to
which it is associated, and matching, see column 3, lines 14-25 and column 21, lines
29-34 for the benefit of managing the status of beds in a hospital.

Therefore, it would have been obvious to one of ordinary skill in the art, at the
time the invention was made to include, matching patient conditions to available beds in
the invention of Ohm ('874) as taught by Stanis et al ('241) for the benefit of accurately
placing patients in the correct ward.

As per Claim 2.

Ohrn ('874) further discloses providing the database on a network, see figure 1.
As per Claim 4.

Ohrn ('874) further discloses contacting one of the healthcare facilities after
retrieving information about the healthcare facility, see column 10, lines 22-30 and
column 5, lines 37-45.

As per Claim 5.

Ohrn ('874) further discloses providing a remote server storing the database, see
figure 1.

As per Claim 6.

Ohrn ('874) further discloses providing a second access to the database wherein
an extended care or a healthcare facility having beds enters the bed availability into the
database via the second access, see column 7, lines 44-50 and column 10, lines 22-30.

As per Claim 7, 19.

Ohrn ('874) further discloses an individual healthcare facility accesses the
database to input the bed availability information for the individual healthcare facility,
see column 7, lines 44-50 and column 10, lines 22-30.

As per Claim 8, 15.

Ohrn ('874) does not specifically disclose bed availability includes a quantity of

beds.

Stanis et al ('241) teaches a quantity of empty beds available, see column 7, line
43 - column 8, line 8 and column 3, lines 14-25 for the benefit of managing the status of
beds in a hospital.

Therefore, it would have been obvious to one of ordinary skill in the art, at the
time the invention was made to include a quantity of beds available in the invention of
Ohrn ('874) as taught by Stanis et al ('241 ) for the benefit of managing the status of
beds in a hospital.

As per Claim 9, 16.

Application/Control Number: 09/544,508
Art Unit: 3639

Page 5

Ohrn ('874) does not specifically disclose bed availability includes types of beds
available.

Stanis et al ('241) teaches a types of beds, see column 7, line 43 - column 8, line
8 and column 3, lines 14-25 for the benefit of managing the status of beds in a hospital.

Therefore, it would have been obvious to one of ordinary skill in the art, at the
time the invention was made to include a quantity of beds available in the invention of
Ohm ('874) as taught by Stanis et al ('241) for the benefit of managing the status of
beds in a hospital.

As per Claim 17.

Ohrn ('874) further discloses the bed availability information includes a projection
of expected availability of beds at a facility in a specified time frame, see column 5, lines
37-63.

9-2. Claims 3, 10, 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Ohrn (6,356,874) in view of Stanis et al (241) further in view of Bruno et al (6,289,088).
As per Claim 3.

Ohrn ('874) does not specifically disclose the network is the internet.

Bruno et al ('088) teaches use of the internet as a less expensive alternative to
long distance service, see column 5, lines 34-56.

Therefore, it would have been obvious to one of ordinary skill in the art, at the
time the invention was made to use the internet as a less expensive alternate network
as taught by Bruno et al (088) in the invention of Ohrn ('874).

As per Claim 10.

Ohrn ('874) further discloses an online form for accessing the database and
inputting information, see figure 3.

Ohrn ('874) does not specifically disclose the network is the internet.

Bruno et al (088) teaches use of the internet as a less expensive alternative to
long distance service, see column 5, lines 34-56.

Therefore, it would have been obvious to one of ordinary skill in the art, at the
time the invention was made to use the internet as a less expensive alternate network
as taught by Bruno et al (088) in the invention of Ohrn (874).

As per Claim 18.

Ohrn (874) further discloses an online form for accessing the database and
inputting information, see figure 3.

Ohrn (874) does not specifically disclose the network is the internet.

Bruno et al (088) teaches use of the internet as a less expensive alternative to
long distance service, see column 5, lines 34-56.

Application/Control Number: 09/544,508 Page 6

Art Unit: 3639

Therefore, it would have been obvious to one of ordinary skill in the art, at the
time the invention was made to use the internet as a less expensive alternate network
as taught by Bruno et al ('088) in the invention of Ohm ('874).

(10) Response to Argument

10-1 . Applicant's arguments that the Ohrn and Stannis et al references cannot be
combined is not convincing. Applicant argues at the systems teach away from one
another. Examiner disagrees, the technology of Stannis is seen to automate the hospital
environment, though during an earlier, punch card era. Ohrn is a modern web interface
into the back office aspects of a hospital. Webifying back office systems is well known
for the integration of newer and older systems and would have been obvious to one of
ordinary skill in the art at the time the invention was made.
10-2 Applicant's argument that Stennis et al teaches only one health care provider
rather than a plurality of providers is convincing. However, Ohrn is relied upon to teach
the plurality of providers, see column 5, lines 37-41 (those hotels which have vacant
rooms), Stennis et al is relied upon for the teaching of the healthcare provider with
vacant rooms.

10-3 Applicant's argument that neither Ohrn nor Stennis et al teach a plurality of types
of medical care is not convincing, Ohrn column 10, lines 27-30, discloses admissions to
hospitals and operations, Stennis et al teaches different nursing stations, see column 7,
lines 59-61 and searching for beds based on need for special attention or service, see
column 21 , lines27-29. Further it is well know that hospitals have different wards, such
as Maternity, Oncology, Cardiac Care etc, which provide different types of medical care
to serve different types of patients with a need for special attention or service.

Application/Control Number: 09/544,508 Page 7

Art Unit: 3639

10-4. Applicant's arguments that Stanis et al reference does not disclose the claimed
matching is not convincing, the matching feature is disclosed in column 21 , lines 29-34,
specifically line 27-28 discloses matching based on "nursing station and control
characters indicating a need for special attention or service" which are seen to be
applicant's claimed medical condition.

10-5 In response to applicant's argument that the examiner's conclusion of
obviousness is based upon improper hindsight reasoning, it must be recognized that
any judgment on obviousness is in a sense necessarily a reconstruction based upon
hindsight reasoning. But so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made, and does
not include knowledge gleaned only from the applicant's disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA
1971).

10-6 Claim 14 differs from Claim 1 in that it does not include the same level of detail
as claim 1 regarding medical condition of the patient, but merely patient data, further it
is an apparatus claim and therefore must be distinguished by structure.
10-7. Claims Directed to an Apparatus must be distinguished from the prior art in terms
of structure rather than function, In re Danly 263 F.2d 844, 847, 120 USPQ 582, 531
(CCPA 1959).

A claim containing a "recitation with respect to the manner in which a claimed
apparatus is intended to be employed does not differentiate the claimed apparatus from
a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the

Application/Control Number: 09/544,508 Page 8

Art Unit: 3639

claim. Ex parte Ma sham, 2 USPQ2d 1657 (bd Pat. App. & Inter. 1987). Thus the
structural limitations of claim 14-19, including a network, a database, an input means,
means for searching, comparing, matching and retrieving are disclosed in Ohm in view
of Stannis et al as described herein. Also as described the limitations of the claim do not
distinguish the claimed apparatus from the prior art.

10-8. As per Claim 5, applicant's arguments regarding a remote database are not
convincing. Orhn teaches a central data processing device with a database, see figure 1
that is remote from the user terminal.

10-9. As per Claim 6, applicant's arguments regarding a second access to the

database is not convincing, see column 7, lines 44-50 and column 10, lines 22-30, that

the update is made automatically is seen to be a second access.

10-10. As per Claims 7, 19, applicant's arguments regarding access to input bed

availability is not convincing, see column 7, lines 44-50 and column 10, lines 22-30, that

the update is made automatically is seen to be input of bed availability.

10-11. As per Claims 8, 15, applicant's arguments regarding a empty bed available is

not convincing, Ohrn discloses empty rooms, but not empty beds, but Stennis et al

does, see column 7, line 43 - column 8, line 8 and column 3, lines 14-25 for the benefit

of managing the status of beds in a hospital.

10-12. As per Claims 9, 16; applicant's arguments regarding types of beds is not
convincing. Ohrn does not disclose types of beds, but Stennis et al does, see column 7,
line 43 - column 8, line 8 and column 3, lines 14-25 for the benefit of managing the
status of beds in a hospital.

Application/Control Number: 09/544,508

Page 9

Art Unit: 3639

10-13. As per Claim 17, applicant's regarding a projection of expected availability is not
convincing. Ohm discloses expected availability in a specified time frame, see column
5, lines 37-63.

10-1 4. As per claims 3, 10, 18, applicant's arguments regarding the status of the internet
and websites as being old and well known at the time of applicant's invention are not
convincing. The internet was old and well known by the April 2000 filing date,
regardless, Bruno discloses the internet, see column 5, lines 34-56.
(11) Related Proceeding(s) Appendix

Copies of the court or Board decision(s) identified in the Related Appeals and
Interferences section of this examiner's answer are provided herein.

For the above reasons, it is believed that the rejections should be sustained.

Patents+TMS
A Professional Corporation
1914 N Milwaukee Avenue
3rd Floor

Chicago, IL 60647

Primary Examiner
Art Unit 3629

May 4, 2006

Conferees

John Weiss (SPE)

Igor Borisov (Primary Examiner)

J. **

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 16

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte PHIL WYATT

Appeal No. 2004-1826
Application No. 09/544,509

ON BRIEF

MAILED

MAR 1 8 2005

U£ PATENT AND TRADEMARK OFF ICE
BOARD Of PATENT APPEALS
AND INTERFERENCES

Before OWENS, RUGGIERO, and DIXON, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from the final rejection of claims 1-20,
which are all of the claims in the application.

THE INVENTION

The appellant claims a method and system for disclosing, in
response to a query related to a medical condition, a medical
resource, such as a doctor or a hospital, that treats the medical
condition queried. Claim 1, which claims the method, is
illustrative:

1

Appeal No. 2004-1826
Application Noi 09/544,509

1. A method for matching medical condition information with a
medical resource, the method comprising the steps of:

providing a computer network having a plurality of remote
computers and at least one remote server wherein the remote
server hosts a website;

accessing the website via an individual remote computer on
the computer network;

inputting a query into the website wherein the query relates
to a medical condition;

providing a database on the remote server wherein the
database stores information relating to a plurality of medical
conditions; and

searching the database for the information wherein the
search is based on the query input into the database and further
wherein the search discloses a medical resource that treats the
medical condition queried.

THE REFERENCES

Siegrist, Jr. et al. (Siegrist) 5,652,842 Jul. 29, 1997

Schlueter, Jr. et al . (Schlueter) 5,974,124 Oct. 26, 1999

Iliff 6,022,315 Feb. 8, 2000

THE REJECTIONS

The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1-11 and 13-20 over Iliff in view of Schlueter, and
claim 12 over Iliff in view of Schlueter and Siegrist.

OPINION

We reverse the aforementioned rejections. We need to
address only the independent claims, i.e., claims 1 and 15.

Claims 1 and 15 require a database search that discloses a
medical resource that treats a medical condition.

2

Appeal No. 2004-1826
Application No. 09/544,509

Iliff discloses a medical diagnosis and treatment advice
system that provides medical advice for approximately one hundred
of the most commonly encountered problems in general practice and
emergency medicine, and may provide information to the public on
any number of other medical topics (col. 4, lines 25-30). if the
system determines that a serious medical condition exists, it
plays a message that advises the patient to seek immediate
medical attention and ends the evaluation process (col. 36,
lines 9-13) .

Schlueter seeks "to gather, organize, and present data which
is collected over a long period of time in a way that best
facilitates accurate diagnosis and proper treatment of such
medical conditions which require long-term profiling of medical
readings- (col. 2, lines 13-17). «Once the information is
present in the database, all the medical practitioner needs to do
is access the information via a network, telephone, or Internet
connection and software capable of presenting processed data in a
format that facilitates diagnosis, such as a graph or a chart*
(col. 3, lines 13-17) .*

Siegrist, which is applied to a dependent claim, discloses
a computer-based method for comparing a service provider, such as
a hospital, to its peers in several areas of competition for a
particular consumer group (col. 1, lines 46-52; col. 2, lines 40-
44) .

3

Appeal No. 2004-1826
Application No. 09/544,509

The examiner argues that iliff discloses "searching the
database for the information wherein the search or request is
based on the query or search request input into the database and
further wherein the search discloses a medical resource that
treats che medical condition queried (iliff, Pigure 31>
Items 2510 and 2546, column 36. lines colxiJm 60( 5? _

63, column 75, lines 18-28,- (answer, pages 4-5,. Those portions
of Iliff t.ach that the system provides medical advice which can
be recommended tests or a recordation that the patient see*
immediate medical attention, but do not teach that the system
discloses a medical resource that treats a medical condition.

The examiner argues that -[tjhe access and retrieval of
information from the database on request, as recited by i Uff ,
reads on searching the database for the information wherein the
search is based on the query input into the database and further
wherein the search discloses a medical resource that treats the
medical condition queried' (answer, page 13,. This argument is
not well taken because the advice retrieved from Iliff > a datat>a3e
does not treat a medical condition.

To establish a prijna facie casfi of obviousness Qf ^
claimed invention the examiner needs prior art that discloses or
would have fairly suggested, to one of ordinary s k i U in the arc

\

( t

Appeal No. 2004-1826
Application No- 09/544,509

a system that discloses, in response to a query related to a
medical condition, a medical resource, such as a doctor or a
hospital, that treats the medical condition queried, and the
examiner has not provided such prior art.

For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the appellant's claimed invention.

DECISION

The rejections under 35 U.S. C. § 103 of claims 1-11 and 13-
20 over Iliff in view of Schlueter, and claim 12 over Iliff in
view of Schlueter and Siegrist, are reversed.

REVERSED

Terrier. Owens
Administrative Patent Judge

Joseph F. Ruggiero
Administrative Patent Judge

BOARD OF PATENT

APPEALS AND

Joseph L. Dixon /
Administrative Patent Judge

INTERFERENCES

JTO/eld

5

Appeal No. 2 004-1826
Application No. 09/544.509

Patent + TM£?

A Professional Corporation
1914 North Milwaukee Avenue
Chicago, IL 60647